• Askeladden L.L.C. v. Intercurrency Software LLCAll claims unpatentable
  PTAB · Jul 14, 2025 · IPR2024-00376 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–18 are unpatentable under §103 over the stated combinations of Calo, Rude, and other references.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner asserts that for the term “prevailing exchange rate,” as recited in claims 1, 2, 6, 9, and 10, “[t]he term prevailing commonly means ‘current.’” Pet. 28–29. According to Petitioner, this is consistent with the ’107 patent. Id. Petitioner asserts that “[t]he only rates the Specification describes using are a ‘forward’ rate or a ‘spot’ rate – in other words, a selected current exchange rate.” Id. at 29 (citing Ex. 1002 ¶ 34). Petitioner thus asserts that “‘prevailing exchange rate’ means ‘a selected current exchange rate that is not an FOREX average exchange rate.’” Id. Petitioner further contends that the term “prevailing currency exchange rate,” as recited in claims 2 and 9–11, “is the same as the prevailing exchange rate but limited specifically to currencies.” Id. Patent Owner takes the position that “[f]or purposes of the present IPR, Patent Owner agrees with Petitioner’s proposed definition for both of the terms ‘prevailing exchange rate’ and ‘prevailing currency exchange rate’ in related IPR2024-00375. Namely, ‘a selected current exchange rate.’” PO Resp. 4. For the remaining terms, Patent Owner “submits that they should be given their ordinary and customary meaning as understood by one of ordinary skill in the art in the field of electronic trading as of the date of the invention.” Id. at 5. We do not need to construe any terms expressly to reach our decision. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). The minor differences between the parties’ proposed constructions of “prevailing exchange rate” and “prevailing currency exchange rate” do not affect the outcome of this proceeding, as Petitioner has carried its burden of demonstrating unpatentability of the challenged claims by a preponderance of the evidence under Petitioner’s proposed constructions or Patent Owner’s proposed constructions.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes “that a [person of ordinary skill in the art] for the ’107 Patent in the relevant field in 2007 would have a bachelor’s degree in computer science or a related study and two years of experience with financial trading systems or an equivalent combination of education and experience.” Pet. 30 (citing Ex. 1002 ¶¶ 71–74). Patent Owner does not propose an alternative level of skill. See generally PO Resp. For purposes of this Decision, we adopt the proposal of Petitioner’s expert, which comports with the teachings of the ’107 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “After review of the arguments and evidence, we conclude that Petitioner has established by a preponderance of evidence that claim 1 would have been obvious over the combination of Calo, Rude, and Sellberg. 2. Claims 2–7, 9–13, and 16–18 For claims 2–7, 9–13, and 16–18, Petitioner relies on the same or similar arguments and evidence discussed above for the combination of Calo, Rude, and Sellberg. See Pet. 45, 66–71. Petitioner further directs us to the claim chart on pages 61 through 77 of the Petition. Id. at 45. Patent Owner relies on the same arguments for claims 2–7, 9–13, and 16–18 that we have discussed for independent claim 1. PO Resp. 10. Based on the reasoning and evidence provided in the Petition (see Pet.” slip op. at 38

  Patent outcomesUS 10,062,107 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,062,107
• Askeladden L.L.C. v. Intercurrency Software LLCAll claims unpatentable
  PTAB · Jul 1, 2025 · IPR2024-00375 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1–12 are unpatentable under §103 over the listed combinations of Calo, Rude, Sellberg or Szoc, with Davidowitz or Kedia for dependent claims.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “Rule 104(b) provides, in relevant part, that the Petition must contain an “[i]dentification of challenge” and “[p]rovide a statement of the precise relief requested for each claim challenged” that includes: (4) How the construed claim is unpatentable under the statutory grounds identified in paragraph (b)(2) of this section. The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon; and (5) The exhibit number of the supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge. The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge. 37 C.F.R. § 42.104(b)(4)–(5) (2023) (emphasis added). Rule 22(a)(2) requires a petition to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2) (2023). Based on the complete record, we determine that the Petition satisfies our rules and do not agree with Patent Owner that the Petition is deficient in this regard. For example, with respect to the obviousness challenge based on Calo, Rude, and Sellberg, the Petition provides a discussion on pages 41–43 with accompanying claim charts identifying where the prior art references disclose each limitation of the challenged claims (Pet. 51–75), and further cites to the supporting testimony of Mr. Reid for the motivation to combine the references (see, e.g., Ex. 1002 ¶ 338). Pet. 43, 51–75. In at least this way, we find that the Petition provides sufficient detailed explanation of the evidence and analysis to satisfy our rules.” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner asserts that for the term “prevailing exchange rate,” as recited in claims 1, 4, and 6, “[t]he term prevailing commonly means ‘current.’” Pet. 27. According to Petitioner, this is consistent with the ’863 patent. Id. Petitioner asserts that “[t]he only rates the Specification describes using are a ‘forward’ rate or a ‘spot’ rate – in other words, a selected current exchange rate.” Id. (citing Ex. 1002 ¶ 200). Petitioner thus asserts that “‘prevailing exchange rate’ means ‘a selected current exchange rate.’” Id. Petitioner further contends that the term “prevailing currency exchange rate,” as recited in claims 1, 2, 3, 6, 7, 8 and 11, “should be given the same meaning as ‘prevailing exchange rate.’” Id. Patent Owner does not contest Petitioner’s proposed constructions. PO Resp. 3 (“For purposes of the present IPR, Patent Owner agrees with Petitioner’s proposed definition of the terms ‘prevailing exchange rate’ and ‘prevailing currency exchange rate’ means ‘a selected current exchange rate.’”). For the remaining terms, Patent Owner “submits that they should be given their ordinary and customary meaning as understood by one of ordinary skill in the art in the field of electronic trading as of the date of the invention.” Id. 3–4. We do not need to construe any terms expressly to reach our decision. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes “that a [person of ordinary skill in the art] for the ’863 Patent in the relevant field in 2007 would have a bachelor’s degree in computer science or a related study and two years of experience with financial trading systems or an equivalent combination of education and experience.” Pet. 27–28 (citing Ex. 1002 ¶¶ 60–61). Patent Owner does not propose an alternative level of skill. See, generally PO Resp. For purposes of this Decision, we adopt the proposal of Petitioner’s expert, which comports with the teachings of the ’863 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Additionally, we observe Mr. Reid testifies that “Sellberg also describes benefits of adding currency exchange features to a trading system, such as increasing liquidity in the system.” Ex. 1002 ¶ 162 (citing Ex. 1019 12). Mr. Reid further explains that “the skilled person would have known that adding currency exchange to a trading system would be a desired improvement.” Id. After reviewing the record, we determine that Petitioner has set forth a sufficient rationale for combining Sellberg’s teachings with Calo and Rude. It is undisputed on the record before us that Sellberg discloses a trading system that utilizes an updated exchange rate that is repeatedly and automatically received from the currency market or the market maker, “and the last received updated exchange rate between the different currency and the specified currency at the time of receiving the order is used as the received current exchange rate.” Ex. 1019 ¶ 24. Moreover, Mr. Reid has explained, with sufficient reasoning and citation to the record, how and why a POSITA would have added Sellberg’s currency exchange features to a trading system. Ex. 1002 ¶ 162. Thus, based on our review of the complete record, including the testimony of Mr. Reid, we are persuaded that the combination of Calo, Rude, and Sellberg discloses this limitation.” slip op. at 36

  Patent outcomesUS 10,776,863 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,776,863
• Askeladden L.L.C. v. Intercurrency Software LLCAll claims unpatentable
  PTAB · Jul 1, 2025 · IPR2024-00378 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1–15 are unpatentable under § 103 over the Calo, Rude, and Sellberg or Szoc combinations, with Davidowitz added for claims 3, 10, 11, and 14.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Patent Owner does not contest Petitioner’s proposed constructions. PO Resp. 4 (“For purposes of the present IPR, Patent Owner agrees with Petitioner’s proposed definition of the term[s] ‘prevailing exchange rate’ [and prevailing currency exchange rate] means ‘a selected current exchange rate.’”). For the remaining terms, Patent Owner “submits that they should be given their ordinary and customary meaning as understood by one of ordinary skill in the art in the field of electronic trading as of the date of the invention.” Id. We do not need to construe any terms expressly to reach our decision. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes “that a [person of ordinary skill in the art] for the ’930 Patent in the relevant field in 2007 would have a bachelor’s degree in computer science or a related study and two years of experience with financial trading systems or an equivalent combination of education and experience.” Pet. 27 (citing Ex. 1002 ¶¶ 73–74). Patent Owner does not propose an alternative level of skill. See, generally PO Resp. For purposes of this Decision, we adopt Petitioner’s proposal, reiterated by the proposal of Petitioner’s expert, which comports with the teachings of the ’930 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “After reviewing the record, we determine that Petitioner has set forth a sufficient rationale for combining Sellberg’s teachings with Calo’s system. Sellberg discloses a trading system that utilizes an updated exchange rate that is repeatedly and automatically received from the currency market or the market maker, “and the last received updated exchange rate between the different currency and the specified currency at the time of receiving the order is used as the received current exchange rate.” Ex. 1019 ¶ 24. Mr. Reid has explained, with sufficient reasoning and citation to the record, how and why a POSITA would have added Sellberg’s currency exchange features to Calo’s trading system. Ex. 1002 ¶ 178. Thus, based on our review of the complete record, including the testimony of Mr. Reid, we are persuaded that the combination of Calo, Rude, and Sellberg discloses this limitation for the reasons given by Petitioner.” slip op. at 33

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “transaction immediately after the equity transaction is executed to lock in an exchange rate as close as possible to that previewed.” Id. ¶ 69 (emphasis added). In this way, we find Calo teaches that the exchange rate may be locked in (e.g., a real-time conversion rate that is obtained right before the transaction takes place) and that the currency exchange occurs immediately after the equity transaction to mitigate uncertainty in currency changes in another time. See Ex. 1005 ¶¶ 30, 69.” slip op. at 31

  Patent outcomesUS 11,449,930 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,449,930
• Crowdstrike, Inc. v. Gosecure, Inc.Institution denied
  PTAB · May 9, 2025 · IPR2025-00069 · APJ Garth D Baer · IPR · Institution

  The Board denied institution because the petition did not show that the prior art teaches creating a fingerprint at the virtual machine monitor, as claims 1–18 and 21–23 require.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review on the grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “We disagree with Petitioner’s arguments. Claim 1 recites “a decoy computer system [that] comprises . . . a virtual machine monitor,” and “at the virtual machine monitor: . . . creating, from the stored activities, a fingerprint.” Ex. 1001, 19:4–22. Thus, the claim’s plain language requires creating a fingerprint at the virtual machine monitor, not just at the decoy system, as Petitioner asserts. When, as here, a claim term has “ordinary, simple English words whose meaning is clear and unquestionable,” we may not redraft those words to mean something different. Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373–75 (Fed. Cir. 2004). Petitioner offers no explanation how one skilled in the art might read “at the virtual machine monitor” to mean at the decoy system, rather than at the virtual machine monitor. Although the claim’s plain language is decisive, we also disagree with Petitioner’s assertion that the ’697 patent’s specification describes only fingerprint creation outside the virtual machine monitor because, as Patent Owner explains, the specification describes fingerprint generation inside and outside the virtual machine monitor. See Sur-reply 1– 2; see id. at 2 (citing Ex. 1001, 6:65–7:2, 10:13–22). Claim 1’s plain language, however, only covers the latter. Last, Petitioner’s characterization of Patent Owner’s infringement allegations in the related district-court proceedings, even if correct, do not undermine the claim’s plain language.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Petitioner does not contest that Capalik’s fingerprint generation occurs outside the components that Petitioner identifies as the claimed virtual machine monitor. Reply 1–3; see Pet. 18–23 (mapping Capalik’s hypervisor kernel 516 to the claimed virtual machine monitor); id. at 30–31 (mapping Capalik’s processing module 508 and signature generation engine 530 to the claimed fingerprint creation); see also Prelim. Resp. 21–23 (explaining Petitioner’s mapping). Instead, Petitioner asserts that the at-issue claim language—“at the virtual machine monitor”—does not require “that each of the subsequently recited steps must be performed by or in the [virtual machine monitor],” but instead only requires “that the fingerprint is generated by the same decoy system that contains the [virtual machine monitor].” Reply 2. Petitioner argues that the intrinsic record supports its position because “[n]owhere in the ’697 Patent is there any teaching or suggestion that a [virtual machine monitor] creates a fingerprint/signature indicative of attack activity,” and instead, “[t]he ’697 Patent teaches that its signature generation engine is separate from the [virtual machine monitor].” Reply 2 (citing Ex. 1001, 8:12–19). In addition, Petitioner asserts that requiring fingerprint creation at the virtual machine monitor “directly” slip op. at 8

  • Adverse judgmentOther

    “D. Statutory Disclaimer and Remaining Challenged Claims The Petition challenges claims 1–23. Pet. 10. However, because Patent Owner disclaimed claims 19 and 20 (Ex. 2010), the remaining challenged claims are 1–18 and 21–23. See 37 C.F.R. § 42.107(e) (2020) (“No inter partes review will be instituted based on disclaimed claims.”). Of the remaining challenged claims, only claim 1 is independent. Claim 1 is reproduced below:” slip op. at 4

  Claim construction§ 103 obviousness
  Patents in suitUS 9,106,697
• Lifecore Fitness, LLC D/B/A Assault Fitness v. Woodway USA, Inc.Some claims unpatentable
  PTAB · May 6, 2025 · IPR2024-00083 · APJ Meredith C Petravick · IPR · Final written decision

  Claims 1–4, 6, 7, 9–13, 15, and 16 are unpatentable as obvious over Socwell, Magid, and Sclater; claim 8 was not shown unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Prior to institution, Patent Owner argued that we should dismiss the Petition because it identifies the Petitioner as the California Corporation and not the Delaware Corporation. Paper 6, 23–24 (Preliminary Response); Paper 9, 1 (Preliminary Sur-Reply); Paper 12 (Conference Call Transcript); Paper 18 (Request for Director Review). In our Decision on Institution, we found Patent Owner’s argument, as applied to the facts of this proceeding, to be unpersuasive and corrected the caption to correctly reference Petitioner as the California Corporation, essentially replacing the “Inc.” with “LLC” in Petitioner’s name. Paper 13, 14–17; see also Paper 21 (Decision Denying Director Review).” slip op. at 3

  • BurdenOther

    “We find Dr. Giachetti’s testimony, alone, insufficient to establish by a preponderance of the evidence that a POSA, given Tollkien and Sclater, would have been motivated to look to one-way sprag-type clutches to solve the problem of unexpected forward motion of the running belt of a treadmill. Without a reference, like Magid, teaching that it was known to use a one-way clutch mechanism on a treadmill to prevent unexpected forward motion, we are persuaded by Patent Owner that Petitioner’s combination is impermissibly based in hindsight. See PO Resp. 42–47. After considering Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has failed to show by a preponderance of the evidence that claim 1 is unpatentable over Tollkien and Sclater.” slip op. at 42

  • ExcludeMotion to exclude, deniedGranted in part

    “Declaration of Robert Giachetti, Ph.D. P.E) under FRE 401–402. Mot. 4 (citing FRE 401–402 in the heading). Patent Owner’s Motion, however, includes no substantive arguments directed to whether Giachetti Declaration is relevant admissible evidence or irrelevant inadmissible evidence. Mot. 4– 7. In its Reply, Patent Owner states: “While the Motion to Exclude does not expressly detail Exhibit 1036’s lack of relevance under FRE 401–402, the irrelevance is plain. Petitioner’s provision of new arguments in Reply, which is not allowed, renders such arguments irrelevant.” PO Reply to Mot., 1, n.1. Patent Owners argument is unpersuasive because it is a mere assertion without adequate explanation. The party moving to exclude evidence bears the burden of proving that it is entitled to the relief requested—namely, that the material sought to be excluded is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a). Patent Owner’s mere assertion does not meet Patent Owner’s burden to show that Exhibit 1036 is irrelevant inadmissible evidence.” slip op. at 52

  • Strike new argumentNew argument consideredDecided for petitioner

    “8 Patent Owner argues that we should not consider Petitioner’s Reply and Exhibits 1036 and 1051 because the Reply and Exhibits relate to new arguments which should have been made in the Petition. PO Sur-Reply 4–5. We do not agree. Petitioner may rely upon Exhibits 1036 and 1051 to response to arguments raised in the Patent Owner’s Response. See PO Resp. (a ); Axonics, Inc. v. Medtronics, Inc., 75 F.4th 1374, 1380–1382 (Fed. Cir. 2023) (“we have continued to recognize that a petitioner is entitled under the APA to respond to new claim construction arguments made by a patent owner.”)” slip op. at 16

  Patent outcomesUS 11,465,005 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,465,005
• Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentable
  PTAB · Feb 28, 2025 · PGR2023-00048 · APJ Stephen E Belisle · PGR · Final written decision

  Claims 1–37, 39–90, and 92–105 are unpatentable as obvious; claims 38 and 91 were not shown unpatentable because the cited references do not teach flanges physically contacting along a juncture.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time of the effective filing date of the ’626 patent, “would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Mechanical Engineering, Structural Engineering or a related/equivalent field and at least four years of work experience in construction connector design/development.” Pet. 11 (citing Ex. 1003 ¶¶ 12–15). Patent Owner does not dispute this assessment. PO Resp. 17–18. In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of these cases would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’626 patent, the background technical field, the prior art, and Petitioner’s proposed and undisputed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Fennell (Ex. 1003 ¶¶ 12–15).” slip op. at 20

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “shaped portion configured to receive the structural component,” “a connection portion,” and “an extension portion,” and that “the extension portion spac[es] the channel-shaped portion from the [connection portion]” and “the channel-shaped portion, the extension portion and the connection portion are rigidly fixed with respect to one another.” Ex. 1001, 12:14–36 (emphases added). Claim 1’s repeated use of “portion[s]” to delineate between the three main elements of the hanger, i.e., channel-shaped portion, connection portion, and extension portion, shows or at least strongly suggests substantial flexibility as to the specific location where one “portion” transitions to another “portion” in the fire wall hanger. Similarly, although claim 1 recites that the “channel-shaped portion” is “configured to receive the structural component,” claim 1 recites no limitation precluding other “portions” of the hanger from also “receiv[ing]” or otherwise contacting the structural component. Patent Owner argues that “channel-shaped portion” should be construed to mean “[the] portion of the hanger that forms a channel configured to receive the structural component.” PO Resp. 19. Petitioner and its expert, Mr. Fennell, agree with this meaning (Pet. Reply 4; Ex. 1046 ¶¶ 16–20), and so do we. Indeed, claim 1 plainly recites this as discussed above. But Patent Owner then urges us to narrow the meaning of “portion” itself such that “channel-shaped portion” requires “all portions of the hanger which directly bound the channel that receives the structural component.” PO Resp. 19 (emphases added). Patent Owner argues the Specification makes this “clear.” Id. (citing Ex. 1001, 2:28–31). Contrary to Patent Owner’s arguments (PO Resp. 19), we find no support in claim 1 to further narrow the interpretation of “portion” in “channel-shaped portion” to mean every portion of the hanger which directly bounds the channel that receives the structural component. See Ex. 1001, 12:14–36 (claim 1). We, like Petitioner, similarly find no support in the Specification or limited prosecution history (see Pet. 5–6), and Patent Owner does not direct us to any, showing that the inventor acted as its own lexicographer or disavowed any claim scope to allot this narrowed interpretation to the subject limitation. See Pet. Reply 3 (“Nowhere does the ’626 patent specification describe that all portions of the hanger directly bounding channel 52 constitute the channel-shaped portion.” (citing Ex. 1046 ¶¶ 16–18; Ex. 1001, 4:39–47)); PO Resp. 19.” slip op. at 33

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Petitioner argues, inter alia, that Yamaguchi teaches a joist hanger with an extension portion defining a space between its back flange and channel-shaped portion, and Bundy teaches to size a space created by an extension portion of its joist hanger to receive two layers of ⅝-inch-thick drywall between its back flange plane and channel-shaped portion. Pet. 16–18 (citing 1003 ¶¶ 75–78; Ex. 1007, 5:16–18, Fig. 1; Ex. 1041 (“Perspective View”; “Usage View”)); see id. at 17–18 (discussing “advantages” of two layers of 5/8" drywall as “fire resistance in a fire separation wall”). Petitioner argues the skilled artisan “would have been motivated to receive drywall between Yamaguchi’s back flange and channel-shaped portion to provide a shielded fire resistant wooden frame wall.” Pet. 18 (citing Ex. 1003 ¶¶ 78–79; Ex. 1007, 2:10–24); see id. ([“The skilled artisan] would have optimized the size of the spacing between Yamaguchi’s back flange and channel-shaped portion to accommodate two layers of 5/8”-thick-drywall according to the size preference described by Bundy for optimal fire protection and wall integrity.” (citing Ex. 1003 ¶ 80; Ex. 1007, 5:10–22)). Petitioner concludes: This modification to Yamaguchi would have been nothing more than applying a known technique (Bundy’s spacing a hanger seat from a wall frame by distance sufficient to accommodate two 5/8”-thick-drywall sheets for fire resistance) to a similar device (Yamaguchi’s hanger having a spacing of indeterminate length) to obtain the predictable result of a firewall hanger having a space between its channel-shaped portion and a wall frame large enough for receiving drywall therebetween, thereby “protect[ing] the structural members of a building.” Pet. 18 (citing Ex. 1007, 5:18–20; Ex. 1003 ¶ 80). Petitioner argues the skilled artisan would have had a reasonable expectation of success in modifying Yamaguchi as discussed above, “because doing so would still allow Yamaguchi’s hanger to perform its intended function of securing a joist to a wall.” Pet. 18 (citing Ex. 1041, 1; Ex. 1003 ¶ 81). Petitioner argues, “[r]ecognizing that Yamaguchi’s and Bundy’s hangers are constructed from sheet metal,” the skilled artisan “would have understood how to modify the size of Yamaguchi’s extension portions to accommodate two layers of 5/8”-thick-drywall while still allowing Yamaguchi’s hanger to secure a joist’s end to a frame wall.” Pet. 18–19 (citing Ex. 1003 ¶¶ 81–83; Ex. 1007, 4:47–51); see id. at 19–20 (discussing that although “Yamaguchi’s described setting is a sill plate,” the skilled artisan “would have been motivated to use Yamaguchi’s hanger on a wood frame wall in particular so that sheathing could be installed in the space behind the joist as taught by Bundy” (citing Ex. 1003 ¶¶ 81–82)). Based on the foregoing and the complete record before us, we find Petitioner’s cited evidence provides sufficient rational reasons to combine Yamaguchi and Bundy to arrive at the invention of claim 1 with a reasonable expectation of success in doing so.” slip op. at 46

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Analysis Patent Owner argues, “[w]hile the asserted prior art does teach flanges or sidewalls that are in opposed relation to each other, none of Adams, Cullen, or Yamaguchi teach that these flanges or sidewalls engage each other along a juncture.” PO Resp. 42–43; see PO Sur-reply 6 (Patent Owner arguing, “Adams’s, Cullen’s, and Yamaguchi’s extension flanges are spaced well apart.”). Petitioner’s arguments to the contrary depend wholly on its proposed interpretation of the term “engaging” (Pet. 58–60; Pet. Reply 30–31), which we reject, as discussed above. Although Yamaguchi (and Cullen and Adams) may teach extension flanges in opposed, face-to-face relation, Petitioner does not explain, let alone with particularity or persuasively, how Yamaguchi’s (or Cullen’s or Adams’) flanges, which would wind up located on opposing sides of a joist (where a joist is mounted in the hanger), also teach such extension flanges engaging each other along a juncture—indeed, what juncture? See PO Sur-reply 7 (“Beyond asserting that the word ‘engaging’—standing alone—does not require ‘touching contact,’ [Petitioner] still does not address how the extension flanges of Yamaguchi, Cullen, and Adams can be said to ‘engage’ each other.”). Based on the foregoing and the complete record before us, we find Petitioner does not sufficiently establish that the combination of Yamaguchi and Bundy teaches or even fairly suggests a fire wall hanger wherein “the first and second extension flanges engag[e] each other along a juncture, the juncture arranged to be positioned within the two layers of ⅝-inch-thick drywall,” as recited in dependent claims 38 and 91.” slip op. at 70

  Patent outcomesUS 11,649,626 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,649,626
• Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentable
  PTAB · Feb 28, 2025 · PGR2023-00049 · APJ Stephen E Belisle · PGR · Final written decision

  Claims 1–37, 39–90, and 92–105 are unpatentable as obvious; claims 38 and 91 were not shown unpatentable because the asserted references did not teach flanges physically touching along a juncture.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time of the effective filing date of the ’626 patent, “would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Mechanical Engineering, Structural Engineering or a related/equivalent field and at least four years of work experience in construction connector design/development.” Pet. 11 (citing Ex. 1003 ¶¶ 12–15). Patent Owner does not dispute this assessment. PO Resp. 17–18.” slip op. at 20

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “artisan would have interpreted or understood the teachings of Yamaguchi and Bundy, as well as of the combination of those references, are unsupported attorney-arguments. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Patent Owner cites no evidence of how the skilled artisan would have understood the combined teachings of Yamaguchi and Bundy, or how such an understanding would support Patent Owner’s attorney arguments. Indeed, Patent Owner did not file any expert testimony in any of the three subject cases, despite that we must resolve the legal question of obviousness on the basis of underlying factual determinations, particularly the scope and content of the prior art and any differences between the claimed subject matter and the prior art from the vantage point of the skilled artisan. Graham, 383 U.S. at 17–18; see Pet. Reply 2 (“As a threshold matter, the Board’s findings in its Institution Decision should be carried forward to its final written decision because Patent Owner did not submit an expert declaration in support of its arguments.”); but see PO Sur-reply 1–4 (“[T]here is no requirement that a party rely exclusively on expert testimony in Post Grant Review proceedings or that attorney argument must be disregarded.”). To the contrary, Petitioner’s expert, Mr. Fennell, persuasively testifies in detail how and why the skilled artisan would have combined the teachings and suggestions of Yamaguchi and Bundy to achieve the invention of claim 1, including the features of limitation 1.3.B. See, e.g., Ex. 1003 ¶¶ 73–83, 96; Ex. 1046 ¶¶ 30–40. We find Mr. Fennell’s testimony credible (and uncontroverted).” slip op. at 40

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Judge Rich’s guidance from over thirty years ago: in all aspects of claim construction, “the name of the game is the claim.” In re Hiniker, 150 F.3d at 1369. Claims 38 and 91 recite, in relevant part, a fire wall hanger wherein “the first and second extension flanges engag[e] each other along a juncture, the juncture arranged to be positioned within the two layers of ⅝-inch-thick drywall.” Ex. 1001, 15:28–33, 21:41–46 (emphasis added). On its face, this limitation requires not only that the first and second extension flanges “engage” each other, but also do so “along a juncture.” This recitation of the flanges “engaging” each other along a “juncture” (i.e., a place where things join) strongly supports interpreting the subject limitation to require physical contact (i.e., touching) at least along some portion of the flanges (such as shown in Figure 2, reproduced above). To the contrary, nothing in claims 38 or 91, or their underlying independent claims, suggests that two flanges “engaging each other along a juncture” means or even includes within its scope two flanges “symmetrical to each other across a juncture,” as urged by Petitioner (Pet. 59).” slip op. at 67

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Petitioner persuasively argues, and we agree: There is certainly no requirement that the hanger contain a component “that prevents the back face of the drywall (or any portion thereof) being secured directly to the face of the wall framing” or that the back flange plane “define” or “bound” the space that receives drywall as alleged by Patent Owner. POR [PO Resp.], 25-26. As explained in the Petition and supported by Mr. Fennell’s testimony, Yamaguchi-Bundy’s modified hanger has an extension portion that is long enough to permit two layers of 5/8-inch-thick drywall (i.e., an extending flange having a length over 1 and 1/4 inches) to be received between the channel-shaped portion and the back flange plane. Pet., 28-30, 37; EX1003, ¶96. That is all that is required. EX1046, ¶32. Pet. Reply 12.” slip op. at 38

  Patent outcomesUS 11,649,626 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,649,626
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution denied
  PTAB · Feb 11, 2025 · IPR2024-01249 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution because neither the Hottinen–Lilleberg nor Zimmerman–Lilleberg combination showed the claimed parameter tracking unit or an equivalent for claims 1, 3–5, and 7–9.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the arguments and evidence presented, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to either ground asserted in the Petition. We therefore deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “at the time of the ’505 patent had at least a bachelor’s in EE/CE/CS, physics, or equivalent, and two years of experience with cellular telecommunications, radio-access network architectures, protocols and signal propagation,” where “[m]ore education can supplement practical experience and vice versa.” Pet. 6 (citing Ex. 1003 ¶¶ 51–55). Patent Owner does not comment on Petitioner’s formulation or offer any competing formulation in its Preliminary Response. See generally Prelim. Resp. We find Petitioner’s proposal to be consistent with the evidence of record, including the asserted prior art and the ’505 patent, and accordingly, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “for use in conjunction with a signal separation unit, in which each received signal has associated channel transfer functions.” Ex. 1001, 12:42–45. The preamble of independent claim 9 similarly recites “a parameter estimation unit for use in conjunction with a signal separation unit for estimating channel transfer function parameters from channel transfer functions.” Id. at 14:4–7. Petitioner, however, contends that “this claim term is not part of the preamble” and that “the preamble is [only] ‘In a multi-user detection system in which interfering signals are purposely allowed to exist.’” Pet. 14. Regardless, Petitioner further contends, to the extent there is any argument that that recitation is part of the preamble, “it is limiting at least because it provides antecedent basis to the ‘parameter estimation unit’ and ‘associated channel transfer functions’ terms that are used in the remainder of the body of the claims and is ‘essential to understanding the structural limitations’ of the parameter estimation unit.” Id. Apart from arguing that the recited “parameter estimation unit” is limiting, Petitioner does not propose any id. Patent Owner does not respond to Petitioner’s contentions and also does not argue that any construction is necessary for the parameter estimation unit. See generally Prelim. Resp. As reproduced in Section II.D. above, the preamble of claim 1, in its entirety, recites, “In a multi-user detection system in which interfering signals are purposely allowed to exist, a parameter estimation unit for use in conjunction with a signal separation unit, in which each received signal has associated channel transfer functions.” Ex. 1001, 12:41–45. The preamble of claim 9 is similar. Id. at 14:3–7 (reciting “In a multi-user detection system in which interfering signals are purposely allowed to exist, a parameter estimation unit for use in conjunction with a signal separation unit for estimating channel transfer function parameters from channel transfer functions”). The body of each claim recites the elements of the recited “parameter estimation unit,” namely, “a signal processor for determining said channel transfer functions for each received signal” and “means . . . for providing uninterrupted estimates of the channel transfer function parameters on a real-time basis . . . .” The phrase “In a multi-user detection system in which interfering signals are purposely allowed to exist” provides additional context for the environment in which the parameter estimation unit is intended to operate. Whether the preamble is limiting is a question that we do not need to decide here, however. Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Because Patent Owner does not dispute Petitioner’s contentions with respect to the preamble recitations, and our decision herein need not reach a determination with regard to that question.” slip op. at 17

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “A claim limitation using the phrase “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.6 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Section 112 ¶ 6 provides that: An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. When construing a means-plus-function limitation under § 112 ¶ 6, it is necessary first to identify the claimed function, and then to look to the specification to identify the corresponding structure for that function. In re Aoyama, 656 F.3d 1293, 1296–97 (Fed. Cir. 2011); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). Under that second step, “structure disclosed in the specification is corresponding 6 Section 4(c) of the Leahy-Smith America Invents Act (AIA) re-designated 35 U.S.C. § 112 ¶ 6, as 35 U.S.C. § 112(f). Because the ’676 patent has a filing date before September 16, 2012 (effective date of the statute), we refer to the pre-AIA version of 35 U.S.C. § 112. associates that structure to the function recited in the claim.” Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003). Our Rules specifically require that the petition identify the corresponding structure in proposing a construction for a means-plus-function claim limitation. 37 C.F.R. § 42.104(b)(3). “This inquiry is undertaken from the perspective of a person of ordinary skill in the art.” Cardiac Pacemakers, 296 F.3d at 1113.” slip op. at 19

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,947,505
• Robert Bosch LLC / Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.No claims unpatentable
  PTAB · Feb 3, 2025 · IPR2023-00292 · APJ Carl M Defranco · IPR · Final written decision

  Claims 1–3, 6, 11, 12, 14, 15, and 18–20 were not shown unpatentable because the asserted combinations failed to establish the claimed substantially constant hydraulic-fluid thickness.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Westport does not dispute Bosch’s proposed definition of the level of skill in the art. PO Resp. 4 (quoting Pet. 23). Based on our review, we see no reason not to adopt Bosch’s undisputed definition of the level of skill in the art, as it appears consistent with the prior art and the specification of the ’829 patent.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Only those claim terms “that are in controversy” need be construed and “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, there does not appear to be a dispute over the meaning of any claim terms. And, after reviewing the record, we do not perceive the need to expressly construe any particular claim term in order to determine patentability of the challenged claims.” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “In contrast, the testimony of Bosch’s expert ignores Klügl’s express teachings and is fraught with contradictions that undermine the weight of that testimony. While this case may be seen as a battle of the experts over their respective interpretations of Klügl, it is clear that Bosch’s expert loses given his inability to credibly explain his opinions during cross-examination. For instance, despite opining in his declaration that Klügl satisfies claim element 1(e) because “the fluid in chamber 5 is held in place by a membrane 6 and moves through a cylindrical space of constant width and unchanging shape” (Ex. 1003 ¶ 220 (emphasis added)), surprisingly, Bosch’s expert could not, or would not, provide his opinion when asked on cross-examination about the meaning of “flexible” and “membrane” in the context of Klügl’s disclosure— Q. [By Westport’s counsel] What’s your understanding what flexible means in the context of the Klugl reference? . . . A. [By Bosch’s expert] Again, I haven’t been asked to offer a formal opinion of what flexible means in light of this, but if you want to talk about a specific -- excuse me -- part of the document, I’d be happy to. Q. What is a membrane? A. Usually, it’s a thin sheet of material but I haven’t formed a formal opinion on it. Q. What is a flexible membrane? A. Again, I haven’t offered a formal opinion what a flexible membrane is.” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree with Westport. That is because Bosch’s argument that Klügl’s hydraulic fluid maintains substantially constant thickness is premised on the erroneous belief that Klügl’s membrane 6 will not flex. But, as Westport correctly notes, Klügl expressly teaches that membrane 6 is “flexible.” See, e.g., Ex. 1006, 7:45–47 (“[F]lexible membranes 6, 8, 26 . . . have a progressive characteristic curve of the spring force in relation to the spring deflection.”), 7:68–9:31 (repeatedly referencing “first flexible element (6)” and “first flexible membrane (6)”). Consistent with this flexibility, Klügl explains that membrane 6 flexes to maintain contact with drive piston 3, stating specifically that “in the rest position without being actuated due to thermal influences or signs of aging, . . . the first membrane 6 is moved in the direction of the drive piston 3” or “is pushed in by the drive piston 3 so that the transmission medium is pressed through the throttle 10 into the compensation chamber 7.” Ex. 1006, 3:63–4:10 (emphases added). And because Klügl’s membrane 6 flexes when transmission module 2 is unactuated, it follows that membrane 6 will also flex when transmission module 2 is actuated.” slip op. at 15

  Patent outcomesUS 6,298,829 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,298,829
• Robert Bosch LLC / Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.No claims unpatentable
  PTAB · Feb 3, 2025 · IPR2023-00293 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1–3, 6, 13, 14, 17–21, and 26–28, 41 were not shown unpatentable because the asserted combinations did not establish the claimed hydraulic link limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends: A POSITA in the technology field of the ’138 patent would have had a degree in mechanical engineering or a similar discipline, along with 2 years of professional experience working with the design and development of fuel injection systems for internal combustion engines or an equivalent level of skill, knowledge, and experience. (See Ex. 1003, ¶¶ 37–39, 41.) This POSITA would be aware of and generally knowledgeable about how fuel injector valves are structured and operate, and how they are used to deliver fuel to an engine’s combustion chambers. (Id., ¶ 40.) Pet. 23. Patent Owner does not dispute Petitioner’s proposed definition. See PO Resp. 4. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Based on the complete record, we do not perceive the need to construe any claim limitation. Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe the claim preambles here where the construction is not ‘material to the [obviousness] dispute.’” (citations omitted, alteration in original)).” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “mere fact” that Klügl labels the membrane as “flexible.” As discussed, Patent Owner explains Klügl teaches membrane 6 is flexible and that membrane 6 deflects and moves in response to fluid pressure in chamber 5 and contact with piston 3. PO Resp. 34 (citing Ex. 1006, 3:63–4:10). Additionally, Dr. Atkinson’s testimony is consistent with Klügl’s disclosure. Dr. Atkinson, explains that “[i]n all embodiments shown, Klügl only ever specifies and describes membrane 6 as a “flexible” membrane or element acknowledging that this flexibility is a necessary and desired feature of its intended purpose and behavior.” Ex. 2022 ¶ 80. With this underlying disclosure in mind, Dr. Atkinson further reasons that a flexible membrane will tend to deform longitudinally upward where it contacts the drive piston and bulge outward based on the structure disclosed in Figure 1. See id. ¶¶ 63, 66–67, 77–81, 87. In contrast, Dr. Quinlan’s testimony in many instances, including this one, is substantively incomplete and fraught with contradictions that undermine the weight of his testimony. For example, at his cross- examination deposition, he testified that he had seen and worked with membranes, but could not provide his opinion on the meaning of “flexible” or “membrane” as disclosed in Klügl. See Ex. 2025, 47:14–48:1. Dr. Quinlan was then directed to column 8 in Klügl, where Klügl teaches among other things that “the transmission module (2) has a pressure chamber (5), which is filled with a transmission medium and is delimited by a first flexible membrane (6).” See id. at 65:5–15; Ex. 1006, 8:44–46 (emphasis added). Provided below is the exchange between Patent Owner’s counsel and Dr. Quinlan regarding this express disclosure: slip op. at 37

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Figure 1 of Klügl depicts an injection valve including housing 12 and piezoelectric actuator 1, which is arranged between upper stop 13 and transmission module 2. Ex. 1006, 1:47–51. We observe that transmission module 2 includes pressure chamber 5 that is at least partially filled with hydraulic fluid and is “delimited” by first membrane 6. Id. at 1:60–62, 1:68–2:2. Throttle or connecting bore 10 connects pressure chamber 5 to compensation chamber 7. Id. at 1:62–66. The connecting bore or throttle allows transmission fluid to flow between pressure chamber 5 and compensation chamber 7. Id. at 3:56–4:10. We further note that Klügl expressly teaches first membrane 6 is “flexible.” Ex. 1006, 7:45–47 (“[F]lexible membranes 6, 8, 26 . . . have a progressive characteristic curve of the spring force in relation to the spring deflection.”). Indeed, consistent with this flexibility, Klügl explains that membrane 6 “moves” to maintain contact with drive piston 3. Specifically, Klügl teaches: [i]f the piezoelectric actuator 1 shortens in the rest position without being actuated due to thermal influences or signs of aging in relation to the housing 12, the spring plate 8 pushes the transmission medium from the compensation chamber 7 via the throttle 10 into the pressure chamber 5, so that the first membrane 6 is moved in the direction of the drive piston 3 and, as a result, the drive piston 3 bears against the first membrane 6 despite the shortening of the piezoelectric actuator 1. However, if the distance between the piezoelectric actuator 1 and the drive piston 3 is reduced, the first membrane 6 is pushed in by the drive piston 3 so that the transmission medium is pressed through the throttle 10 into the compensation chamber 7 against the spring force of the spring plate 8. As a result, the drive piston 3 is always in contact with the first membrane 6 in this case as well. Id. at 3:63–4:10 (emphases added).” slip op. at 34

  Patent outcomesUS 6,575,138 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,575,138

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.